James P. Hammond et al.

Patent Trials and Appeals Board

Jul 17, 2019

13049840 - (D) (P.T.A.B. Jul. 17, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/049,840 03/16/2011 James P. Hammond 0813882-00017 1482
545 7590 07/17/2019
K&L GATES LLP-New York
599 Lexington Avenue
33rd Floor
New York, NY 10022-6030
EXAMINER
MORNHINWEG, JEFFREY P
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
07/17/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES P. HAMMOND, ROXANNE RESCH,
THOMAS RATHKE, and DARRELL GERDES

____________

Appeal 2018-007494
Application 13/049,840
Technology Center 1700
____________

Before BRADLEY R. GARRIS, GRACE KARAFFA OBERMANN,
and MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–3, 6–8, and 10–23 of
Application 13/049,840 under 35 U.S.C. § 103(a). Non-Final Act. (Sept. 27,
2017) 3–14. Appellants1 seek reversal of the rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.

1 The real party in interest is identified as Imperial Sugar Company. Appeal
Br. 2.
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Application 13/049,840
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BACKGROUND
The present application generally relates to reduced-calorie natural
sweeteners and methods for their production. Spec. ¶ 10. The described
reduced-calorie sweetener compositions are made by a process that includes
co-crystallization of sucrose and natural sweeteners. Id. ¶¶ 10, 27. The
Specification teaches that “natural sweetener[s]” are naturally occurring
substances, or extracts therefrom, which “provide a high sweetness per unit
mass and which provide little or no nutritive value. Preferably, the natural
sweetener will have a sweetness per unit mass greater than that of natural
sugar (sucrose).” Id. ¶ 58. The Specification further teaches that “the
process may further comprise contacting the solution of a mixture of sucrose
and natural sweetener with invert syrup.” Id. ¶ 27. “[I]nvert syrup” is
defined to mean a sucrose-based syrup “resulting from the hydrolysis of
sucrose into glucose, fructose, and residual sucrose” and characterized by
other features not relevant to our analysis. Id. ¶ 57. The co-crystallization
process includes air cooling and vacuum evaporation. Id. ¶¶ 27, 77.
Claim 22 is illustrative of the subject matter on appeal and is
reproduced below:
22. A process for the preparation of a co-crystallized sucrose/
natural sweetener product, the process comprising:
contacting a sucrose solution with an invert syrup and a
natural sweetener to produce an admixture of sucrose, invert
syrup and natural sweetener;
heating the admixture of sucrose, invert syrup and natural
sweetener for a period of time; and
producing the co-crystallized sucrose/natural sweetener
product with a particle size between 100 and 2000 microns by
co-crystallizing the heated admixture using a controlled, co-
Appeal 2018-007494
Application 13/049,840
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crystallization process comprising simultaneous air cooling and
vacuum evaporation under reduced pressure conditions.
Appeal Br. 34 (Claims App.).
REJECTION
The Examiner maintains the rejection of claims 1–3, 6–8, and 10–23
as obvious over Prakash et al. (US 2008/0292775 A1, published Nov. 27,
2008 (“Prakash”)) in view of Arango Moreno (US 2010/0034945 Al,
published Feb. 11, 2010 (“Arango Moreno”)). Non-Final Act. 3–14.
DISCUSSION
The Examiner finds that the primary reference, Prakash, teaches the
co-crystallization of sucrose and a natural sweetener with added invert sugar.
Non-Final Act. 3, 8. The Examiner further finds that Prakash does not
explicitly teach “the use of a heated evaporator to effect co-crystallization of
the components with simultaneous air cooling and vacuum evaporation at
reduced pressure, or the particle size of the co-crystallized product as being
between 100 and 2000 microns.” Id. at 3.
The Examiner finds that the secondary reference, Arango Moreno,
discloses a process for co-crystallization of sucrose with a natural sweetener
“using a controlled, co-crystallization process with simultaneous air cooling
and vacuum evaporation (where evaporation of water will inherently result
in air cooling of the product).” Id. (internal citations omitted) (emphasis
added). The Examiner determines that “[a] skilled practitioner would
recognize that incorporating a vacuum as in Arango Moreno would speed up
the evaporation process resulting in improved process times. As such, the
incorporation of vacuum evaporation at reduced pressure in a heated
evaporator would be obvious to a skilled practitioner.” Id. at 4.
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Appellants argue that the rejection is in error on several bases.
Appeal Br. 10–30. Appellants present arguments for a number of claims
beginning with claim 22. Id.

Claim 22
Appellants argue that claim 22 is rejected in error because the cited
references do not teach simultaneous air cooling and vacuum evaporation.
Id. at 14–17. Claim 22 requires, in part, as follows:
producing the co-crystallized sucrose/natural sweetener
product with a particle size between 100 and 2000 microns by
co-crystallizing the heated admixture using a controlled, co-
crystallization process comprising simultaneous air cooling
and vacuum evaporation under reduced pressure
conditions.

Id. at 34 (Claims App.) (emphasis added). Appellants argue that the
Examiner “essentially read[s] ‘air cooling’ out of [c]laim 22 by asserting that
‘air cooling’ and ‘vacuum evaporation’ are the same.” Appeal Br. 16.
Appellants cite to the Specification which provides that
[t]he viscous product mixture then passes through a jacketed
chute 123 at one end of the tray to the inlet of a turbilizer [sic]
126 having a fan 125’ and vacuum 125” set up as shown
(vacuum 125” placed near the product stream inlet, and the fan
125’ located near the oppositely-spaced product stream outlet),
blowing air across the length of the turbulizer 126. . . . As the
product passes through the turbulizer 126, the fan and vacuum
arrangement has a simultaneous cooling and evaporating effect
as the product stream flows from the input end to the output
end. As the product mixture slowly passes through the
turbulizer, the product co-crystallizes out with continuous air
cooling and simultaneous moisture evaporation.

Appeal 2018-007494
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Id. at 16–17 (citing Spec. ¶ 69 [sic ¶ 77]) (emphasis omitted). Appellants do
not, however, put forward an express proposed construction of “air cooling.”
In the Answer, the Examiner finds as follows regarding air cooling
and vacuum evaporation:
Paragraphs [0036], [0039] and [0040] [are] relied on for
teaching the application of vacuum to concentrate a mixture via
evaporation of water ([0036] and [0039]) followed by recovery
of the crystals ([0040]), where co-crystallization occurs at
paragraph [0038]. Paragraph [0023] of Arango Moreno clarifies
that the vacuum pan is a “simple effect evaporation unit that
operates under vacuum”. The reference thus explicitly discloses
the application of vacuum and evaporation, which is also
equivalent to performing the step “under reduced pressure
conditions”. Examiner interpreted “air cooling” to encompass
the cooling effect that inherently occurs upon evaporation of
water, where the vaporization of water at the surface of the
liquid reduces the temperature of the liquid.

Answer 17. Appellants do not contest that Arango Moreno teaches
evaporation. Rather, they dispute whether it teaches simultaneous air
cooling and evaporation. Thus, Appellants’ argument implicates the
meaning of the claim term “air cooling.”
The Specification gives little guidance regarding this term. It
mentions a “co-crystallization process with air cooling and vacuum
evaporation.” Spec. ¶ 27. Additionally, in reference to Figure 2, the
Specification teaches that “[a]s the product mixture slowly passes through
the turbulizer, the product co-crystallizes out with continuous air cooling and
simultaneous moisture evaporation.” Id. ¶ 77. Figure 2 is reproduced, in
part, below.
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Figure 2 of the Specification is a process flow diagram illustrating in detail
the steps of the described process. Id. ¶ 73. The excerpted portion depicts
“turb[u]lizer 126 having a fan 125’ and vacuum 125.” Id. ¶ 77. The fan is
described as “blowing air across the length of the turbulizer 126.” Id.
Additionally, several claims require “simultaneous air cooling and
vacuum evaporation,” thus, suggesting two separate processes.
Considering the foregoing, the term “air cooling” appears to be used
in its conventional sense to mean bringing ambient air into contact with a
composition having a relatively higher temperature in order to reduce the
temperature of the composition.
Arango Moreno does not teach such a cooling step. Rather, it teaches
the use of a vacuum pan at a temperature between 60–75˚ C. Arango
Moreno ¶ 36. The vacuum pan of Arango Moreno is taught to be a “simple
effect evaporation unit that operates under vacuum and which consists of a
steam driven heating system.” Id. ¶ 23; see also Fig. 1 (vacuum pan 2). The
Examiner does not address these disclosures, which suggest that Arango
Moreno employs a heating element to maintain a temperature between 60–
75˚ C in a closed system. Nor does the Examiner identify any teaching in
Arango Moreno of an air inlet that would permit air cooling as required by
the claims at issue.
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Given the foregoing claim construction and the teachings of Arango
Moreno, the Examiner’s finding that the evaporation step taught by Arango
Moreno discloses “simultaneous air cooling and vacuum evaporation” is
shown to be reversible error.
Claims 1–3, 20, 21, and 23 are process claims that also include
(directly or through dependence) the limitation regarding “simultaneous air
cooling and vacuum evaporation.” Appeal Br. 31, 34, 35 (Claims App.).
Accordingly, the rejections of claims 1–3 and 20–23 are reversed for the
reasons set forth above.

Claims 6–8 and 10–19
The remaining claims at issue are product claims to a “sweetener
product produced in accordance with the process of claim 22” including
various additional limitations.
All of the remaining claims are product-by-process claims. “[W]hen
considering the patentability of product claims that contain process
limitations, claim scope is generally based on the product itself, not the
process. If the process limitation connotes specific structure and may be
considered a structural limitation, however, that structure should be
considered.” In re Nordt Dev. Co., LLC, 881 F.3d 1371, 1374 (Fed. Cir.
2018) (internal citations omitted). Accordingly, although we have
determined that Appellants have shown reversible error in the rejection of
claim 22, and that the product-by-process claims at issue depend from claim
22, such determination is not dispositive as to such product-by-process
claims.
Claim 22 (the process claim from which all remaining claims depend)
requires as follows:
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Application 13/049,840
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producing the co-crystallized sucrose/natural sweetener
product with a particle size between 100 and 2000 microns by
co-crystallizing the heated admixture using a controlled, co-
crystallization process comprising simultaneous air cooling and
vacuum evaporation under reduced pressure conditions.

Appeal Br. 34 (Claims App.). Accordingly, all of the product claims require
the recited particle size.
The Examiner finds that one of skill in the art would have had reason
to use invert sugar in combination with sucrose and a natural sweetener.
Final Act. 3. This finding is well-supported. See Prakash ¶ 121. The
Examiner, however, rejects Appellants’ assertion that the amount of invert
syrup included in the combination is critical to the co-crystallization
required by the claim, and necessary to produce a product characterized by
the claimed particle sizes, due to the suitability of invert syrup as a binder.
Ans. 18–19 (bridging paragraph) (citing Br. 18 ¶ 2), 20–22. Appellants’
assertions, in that regard, are support by declaration evidence. See Br. 18 ¶ 2
(citing Declaration of Darrell Gerdes under 37 C.R.F. § 1.132 executed
March 8, 2011, ¶ 7). The Examiner does not effectively refute that
evidence. Ans. 18–20. Rather, the Examiner relies upon Prakash’s
teachings to add invert sugar for use as a sweet taste improving composition.
Final Act. 3.
Appellants’ evidence that the claimed particle size will not be
achieved if the process is practiced without invert sugar, or with an
inadequate amount of invert sugar, stands effectively unrefuted by the
Examiner. See Declaration of Darrell Gerdes Under 37 C.F.R. § 1.132
executed March 8, 2017 ¶ 7; see also Declaration of Darrell Gerdes Under
37 C.F.R. § 1.132 executed March 14, 2017 ¶ 6.
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The Examiner finds that this declaration is contrary to Prakash’s
teachings regarding particle size. Answer 21–22. We do not adopt the
Examiner’s findings in this regard as they are not supported by evidence
directly relating to the method of the proposed combination.
The rejection is not predicated upon the teachings of Prakash in
isolation. Final Act. 3–4. Rather, the rejection is based upon a hypothetical
co-crystallization process that includes the heat evaporation step of Arango
Moreno. Id. Despite this, the Examiner relies on teachings regarding
agglomeration (Prakash ¶ 35) rather than co-crystallization or a method of
co-crystallization that differs from the claims (id. ¶¶ 18–19) while the
Gerdes Declaration relates directly to the method at issue. On this record,
we agree with Appellants that the combination of prior art disclosures
advanced by the Examiner is not shown to suggest the “flash crystallization
process” that would produce co-crystallization characterized by the particle
sizes recited in claim 22. Br. 15, 17–22.
The cited prior art references do not teach an air cooling step or the
use of invert sugar in the appropriate quantity to act as a binder. Here, the
particle size limitation “connotes specific structure,” In re Nordt Dev. Co.,
LLC, 881 F.3d at 1374. The cited references are not shown to teach the
claimed particle size. Accordingly, the references have not been shown to
teach each limitation of the product claims.
CONCLUSION
In view of the foregoing, the rejection of claims 1–3, 6–8, and 10–23
as obvious over Prakash in view of Arango Moreno is reversed.
REVERSED